2.1 Likelihood of deception or confusion

The question of whether something is likely to deceive or cause confusion was discussed in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410, a NZ Court of Appeal decision. Richardson J held at page 438 that the question is not one of “hypothetical possibilities” but is concerned with “practical business probabilities”. Although the court’s consideration was in relation to section 16 of the Trade Marks Act 1953, the wording of that section mirrors the current wording of section 17(1)(a) of the Act.

The relevant considerations were set out by Richardson J at pages 422 to 423 of the Pioneer Hi-Bred case² and can be summarised as follows in relation to the current Act:

1. The onus is on the applicant for registration of the trade mark to establish that the proposed mark does not offend against section 17 of the Act and that onus is discharged on the balance of probabilities.³
2. Any evidence as to likelihood of deception or confusion must relate to the position at the date of the application for registration.
3. The concern is with the possible future use of the mark in respect of the goods and/or services specified in the application.
4. Section 17 of the Act is not concerned with the particular mode of presentation of the goods and/or services adopted or proposed by the applicant but with the use of the mark in any manner which may be regarded as a fair and proper use of it.⁴
5. In considering the likelihood of deception or confusion all the surrounding circumstances have to be taken into consideration, including the circumstances in which the applicant’s mark may be used, the market in which the goods and/or services may be bought and sold and the character or those involved in that market.
6. It is use of the mark in New Zealand that has to be considered and association of a similar mark with another trader in overseas countries or market is irrelevant, except in so far as it bears on the likelihood of deception or confusion in the New Zealand market.
7. It is in relation to commercial dealings with the goods and/or services that the question of deception or confusion has to be considered, and the persons whose states of mind are material are the prospective or potential purchasers of the goods and/or services of the kind to which the applicant may apply the mark and others involved in the purchase transactions.
8. Confusion and deception have different meanings. Haslam J considered their separate meanings in the New Zealand Breweries Ltd v Heineken’s Bier Browerij Maatschappij NV [1964] NZLR 115 (the Heineken case), at 142 where he stated:

9. The test of likelihood of deception or confusion does not require that all persons in the market are likely to be deceived or confused. But it is not sufficient that someone in the market is likely to be deceived or confused. A balance has to be struck.
10. Where goods and/or services are sold or may be sold for the general public for consumption or domestic use, the examiner is entitled to take into account the examiners own experience and reactions as a member of the public when considering whether buyers would be likely to be deceived or confused by use of a trade mark. But where goods and/or services are of a kind not normally sold to the public at large, but are ordinarily sold and expected to be sold in a specialist market consisting of persons engaged in a particular trade, evidence of persons accustomed to dealing in that market as to the likelihood of deception or confusion is essential.⁵

Footnotes

² Affirmed more recently in Pacific Blue Airlines Pty Ltd v Air New Zealand Ltd (Assistant Commissioner Hastie, T27/2005, 26 September 2005), Carabao Tawandang Company Ltd v Red Bull GmbH (unreported, Wellington High Court, CIV 2005-485-1975, 31 August 2006) and Telecom IP Ltd v Beta Telecom Ltd (unreported, Wellington High Court, CIV 2004-485-2789, 27 September 2006)

³ See Polaroid Corporation v Hannaford & Burton Ltd [1975] 1 NZLR 566

⁴ See Smith Hayden & Co Ltd’s Application (1945) 63 RPC 97, affirmed by the Privy Council in Hannaford & Burton Ltd v Polaroid Corporation [1976] 2 NZLR 14 at 18

⁵ GE Trade Mark [1973] RPC 297 at page 321.